In general parlance the terms “copyright”, “trademark”, and “patent” are often incorrectly interchanged, much to the chagrin of IP practitioners. While all three types of IP are very different, they are inextricably linked in many cases.

The recent Trademark Opposition Board (the “Board”) case of Pablo Enterprise pte. Ltd. v Hai Lun Tang, 2019 TMOB 54, serves as an important reminder that at least trademark and copyright protection frequently overlap. Moreover, the case confirms that the Board has jurisdiction to assess certain copyright claims within the context of a trademark opposition. Accordingly, if an applicant attempts to register a trademark which includes design elements that are already subject to third party copyright protection (registered or not), the copyright owner may oppose registration on grounds that the applicant is not entitled to use the mark because such use constitutes copyright infringement.

In the case, Hai Lun Tang (“Tang”) sought to register the trademark PABLO and Design (the “Trademark”) in association with “cakes”. The Trademark Examiner eventually approved the Trademark, finding no obstacles on the Canadian Trademarks Register. Once advertised, however, the Trademark was opposed by Pablo Enterprise pte. Ltd. (“Pablo”) on grounds that the Trademark was substantially similar to an artistic work for which Pablo already owned a Canadian copyright registration. The Trademark and Pablo’s artistic work are reproduced below.

Pablo’s opposition cited several grounds under the Trademarks Act (the “TMA”), but the Board found that one ground alone was sufficient to dispose of the case. Specifically, the Board focused on whether the application wrongly stated that Tang was entitled to use the Trademark, as is required under Section 30(i) of the TMA. Pablo argued that Tang could not have been entitled to use the Trademark at the filing date, because such use would infringe upon its copyright registration under the Copyright Act.

The Board indicated that non-compliance with Section 30(i) of the TMA would only be found where there are “exceptional circumstances” rendering the statement of entitlement untrue, typically involving evidence of bad faith or illegality. Contravention of another federal statute would be such an exceptional circumstance, including contravention of the Copyright Act or of other federal statutes. The Board then proceeded to consider the requirements for prima facie copyright infringement under the Copyright Act, confirming that, while the opponent was not required to own a copyright registration, such registration raised a rebuttable presumption of ownership.

Upon review of the available evidence, the Board found that Pablo had demonstrated a prima facie case of copyright infringement under the Copyright Act as of the filing date of Tang’s application. Further, the Board confirmed that this was sufficient to meet the initial evidential burden for the Section 30(i) of the TMA ground of opposition. Accordingly, the opposition was successful and registration of the Trademark was refused.

Key Takeaways:

• When using or incorporating a design element into a trademark, consider whether the design is substantially similar to one that is already subject to copyright protection, as well as whether or not the third party design is also subject to trademark protection.
• When using or incorporating a design element into a trademark, ensure that copyright ownership is properly assigned or licensed by the designer/creator, as well as ensuring that the designer/creator has waived his/her moral rights.
• If a third party is using or applying to register a design mark which is similar to your design, consider whether you can oppose registration of the mark or claim copyright infringement, even if you don’t have a trademark registration or trademark use.
• Consider copyright registration for designs used in trademarks; although it’s not necessary for copyright protection in Canada, registration provides a valuable rebuttable presumption of ownership.
• The TMA was amended, effective June 17, 2019, including the wording in section 30 around entitlement to registration. Time and future Board and Court decisions will tell whether those amendments might have any effect on the above decision.